(Community trade mark — Application for the Community word mark INVESTING FOR A NEW WORLD — Mark consisting of an advertising slogan — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,

defendant,

ACTION brought against the decision of the First Board of Appeal of OHIM of 31 October 2013 (Case R 573/2013-1), concerning an application for registration of the word sign INVESTING FOR A NEW WORLD as a Community trade mark,

having regard to the application lodged at the Court Registry on 23 January 2014,

having regard to the response lodged at the Court Registry on 16 April 2014,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 28 August 2012, the applicant, Blackrock, Inc., filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 Registration as a mark was sought for the word sign INVESTING FOR A NEW WORLD.

3 The services in respect of which registration was sought are in Classes 35 and 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

4 By letter of 28 September 2012, the examiner informed the applicant that, pursuant to Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, the sign at issue could not be registered.

5 On 17 January 2013, the applicant submitted its observations on the grounds for refusal of the mark applied for referred to by the examiner.

6 By decision of 7 February 2013, the examiner maintained her initial objections, with the result that she refused registration of the mark applied for pursuant to Article 7(1)(b) and Article 7(2) of Regulation No 207/2009.

7 On 25 March 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against that decision.

8 By decision of 31 October 2013 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the applicant’s appeal. First, it defined the relevant public as consisting of English-speaking average consumers and English-speaking professionals. It then stated that, in view of the nature of the services at issue, the level of attention of the relevant public was ‘relatively high’. It also stated that the expression ‘investing for a new world’ would be understood by the relevant public, without any interpretative effort, as a laudatory message according to which the services concerned were intended for a new world’s needs. The Board of Appeal took the view that that meaning is particularly clear because the services in question relate to financial investments or related services and have a close link with the word ‘investing’. According to the Board of Appeal, the mark applied for was not therefore an indication of the commercial origin of those services. Furthermore, in the Board of Appeal’s view, nothing in that expression, beyond its obvious promotional meaning, would enable the public to memorise it easily and instantly as a distinctive mark. In that regard, the Board of Appeal pointed out that the mark applied for did not constitute a play on words and was not imaginative, surprising or unexpected. Furthermore, the Board of Appeal took the view that that analysis does not misconstrue the judgment of 21 January 2010 in Audi v OHIM, C‑398/08 P, ECR, EU:C:2010:29, inasmuch as, in the present case, the mark applied for had not been rejected on the ground that it was a promotional slogan, but on the ground that it was not perceived by the relevant public as an indication of the commercial origin of the services concerned because it was a banal slogan with a clear and unambiguous laudatory meaning. Lastly, the Board of Appeal stated that, in the case which gave rise to the judgment in Audi v OHIM, the slogan in question was also widely known on account of its use over a period of many years, which was not the case in this instance.

11 In support of the action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, which is subdivided into two parts. By the first part, the applicant submits that the Board of Appeal incorrectly assessed the distinctive character of the mark applied for. By the second part, it alleges, in essence, that the Board of Appeal did not draw the appropriate inferences from the judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29.

The first part

12 In the first part of the single plea, the applicant alleges, in essence, that the Board of Appeal erred in finding that the mark applied for had no distinctive character. It submits, inter alia, that the expression ‘investing for a new world’ is endowed with a certain resonance inasmuch as it has multiple meanings and will not therefore be perceived as a banal slogan which describes the nature of the financial services in question.

14 Article 4 of Regulation No 207/2009 provides that a Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

15 The essential function of a trade mark is that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgment of 12 June 2007 in MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, EU:T:2007:172, paragraph 28, and judgment of 14 June 2007 in Europig v OHIM (EUROPIG), T‑207/06, ECR, EU:T:2007:179, paragraph 25).

16 Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character must not be registered.

17 According to settled case-law, for a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (judgment of 29 April 2004 in Procter & Gamble v OHIM, C‑468/01 P to C‑472/01 P, ECR, EU:C:2004:259, paragraph 32; judgment of 21 October 2004 in OHIM v Erpo Möbelwerk, C‑64/02 P, ECR, EU:C:2004:645, paragraph 42; and judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, paragraph 33).

18 That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the relevant public’s perception of the mark (see judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, paragraph 34 and the case-law cited, and judgment of 12 July 2012 in Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 24 and the case-law cited).

19 As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded as such by virtue of such use. For the purposes of assessing the distinctiveness of such marks, it is inappropriate to apply to those marks criteria stricter than those applicable to other signs (judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, paragraphs 35 and 36, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 25).

20 Whilst the criteria for assessing distinctiveness are the same for the various categories of trade mark, it may become apparent, when applying those criteria, that the relevant public’s perception is not necessarily the same in relation to each of those categories and that, therefore, it may prove more difficult to establish the distinctiveness of the marks in certain categories than of those in other categories (see judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, paragraph 37 and the case-law cited, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 26 and the case-law cited).

21 Such difficulties do not justify, in any event, the laying down of specific criteria supplementing or derogating from the criterion of distinctiveness in respect of word marks consisting of advertising slogans (see, to that effect, judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, paragraph 38, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 27).

22 An advertising slogan cannot, however, be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order for such a slogan to be distinctive (judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, paragraph 39, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 28).

23 Furthermore, the mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient in itself to support the conclusion that that mark is devoid of distinctive character (judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, paragraph 44, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 29).

24 The laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character (judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, paragraph 45, and judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraph 30).

25 It is in the light of those considerations that it must be examined whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009 in finding that the mark applied for was devoid of any distinctive character.

26 In the first place, as regards the definition of the relevant public, it must be pointed out that it is apparent from paragraphs 18 and 20 of the contested decision that that public consists of both average consumers and professionals and that, since the mark applied for consists of English words, its distinctive character has to be assessed by reference to the English-speaking public. That definition of the relevant public, which the parties do not, moreover, dispute, must be confirmed.

27 The Board of Appeal’s assertion, in paragraph 18 of the contested decision, that the level of attention of the relevant public was relatively high because what were involved were financial services is, however, incorrect. As is apparent from well-established case-law, the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether what is involved are average end consumers (see, to that effect, judgment of 17 November 2009 in Apollo Group v OHIM (THINKING AHEAD), T-473/08, EU:T:2009:442, paragraph 33, and judgment of 25 March 2014 in Deutsche Bank v OHIM (Passion to Perform), T‑291/12, EU:T:2014:155, paragraph 32) or a more attentive public made up of specialists or circumspect consumers (see, to that effect, judgment of 5 December 2002 in Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS), T‑130/01, ECR, EU:T:2002:301, paragraph 24; judgment of 3 July 2003 in Best Buy Concepts v OHIM (BEST BUY), T‑122/01, ECR, EU:T:2003:183, paragraph 25; and judgment of 15 September 2005 in Citicorp v OHIM (LIVE RICHLY), T‑320/03, ECR, EU:T:2005:325, paragraph 74), even if, as in the present case, the services concerned are financial and monetary services (see, to that effect, judgment in LIVE RICHLY, EU:T:2005:325, paragraphs 73 and 74, and judgment in Passion to Perform, EU:T:2014:155, paragraph 33).

28 Nevertheless, the incorrect nature of the Board of Appeal’s assertion is not capable of calling into question its assessment regarding the lack of distinctive character of the mark applied for. The degree of specialisation of the relevant public and its level of attention cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign since such an assessment is dependent upon the overall impression created by that sign. Accordingly, although it is true that the level of attention of the relevant specialist public is higher than that of the average consumer, it does not necessarily follow that if a sign has a weaker distinctive character that is sufficient to allow that sign to be registered where the relevant public is specialist (see, to that effect, judgment in Smart Technologies v OHIM, cited in paragraph 18 above, EU:C:2012:460, paragraphs 48 and 49). In the present case, since the Board of Appeal based its analysis on the premiss that the level of attention of the relevant public was relatively high, its findings as regards the lack of distinctive character of the mark applied for could not have been different if it had taken the view that the level of attention of that public was relatively low.

29 In the second place, it is necessary to consider whether the Board of Appeal correctly analysed the meaning of the mark applied for in order to conclude that the mark had no distinctive character by reference to the services in respect of which registration had been applied for and by reference to the relevant public’s perception of that mark.

30 First, it must be pointed out that the sign at issue consists of a number of word elements. It is apparent from settled case-law that the assessment of the distinctive character of compound word signs cannot be limited to an evaluation of each of their words or components, considered in isolation, but must, on any view, be based on the overall perception of those signs by the relevant public (see, to that effect, judgment of 8 May 2008 in Eurohypo v OHIM, C‑304/06 P, ECR, EU:C:2008:261, paragraph 41 and the case-law cited). That does not mean, however, that one may not start by examining each of the individual features which make up the mark in question. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (judgment of 25 October 2007 in Develey v OHIM, C‑238/06 P, ECR, EU:C:2007:635, paragraph 82; judgment of 8 February 2011 in Paroc v OHIM (INSULATE FOR LIFE), T‑157/08, ECR, EU:T:2011:33, paragraph 50; and judgment of 6 June 2013 in Delphi Technologies v OHIM (INNOVATION FOR THE REAL WORLD), T‑515/11, EU:T:2013:300, paragraph 29).

31 In the present case, the sign applied for consists of five common English words, namely the words ‘investing’, ‘for’, ‘a’, ‘new’ and ‘world’. Accordingly, as the Board of Appeal rightly stated in paragraph 21 of the contested decision, and the applicant does not, moreover, contradict this, ‘the word “investing” means to lay out money or capital in an enterprise with the expectation of profit’. The word ‘for’ is a preposition meaning ‘intended to reach’, whereas ‘a new world’ refers to ‘the Earth and all the people, places and things on it; a group of things such as countries or animals, or an area of human activity or understanding’. It is true that, in the definition of the latter expression, the Board of Appeal did not refer expressly to the adjective ‘new’ — which, as OHIM states, reproducing the examiner’s definition, means ‘recently created or having started to exist recently’ –, but that is irrelevant as it is an adjective the meaning of which is well-known and unequivocal.

32 The combination of common English words in a single sign, which is in conformity with the rules of English grammar, conveys a clear and unequivocal message which is immediately apparent and does not require any interpretative effort on the part of an English-speaking consumer (see, to that effect, judgment of 25 March 2014 in Deutsche Bank v OHIM (Leistung aus Leidenschaft), T‑539/11, EU:T:2014:154, and judgment in Passion to Perform, cited in paragraph 27 above, EU:T:2014:155, paragraph 41). Accordingly, as the Board of Appeal stated in paragraphs 22 and 23 of the contested decision, the word sign INVESTING FOR A NEW WORLD, considered as a whole, may be easily understood by the relevant public, in view of the common English words of which it consists, as meaning that the services offered are intended for a new world’s needs. Given that the services covered by the mark applied for are all related to activities connected with finance and have a close link with the word ‘investing’, as defined in paragraph 31 above, the Board of Appeal was right to find, in paragraph 31 of the contested decision, that the message conveyed by the expression ‘investing for a new world’ was that, when purchasing the services in question, the money or capital invested creates an opportunity in a new world, which carries a positive connotation.

33 What is more, the expression of which the mark applied for consists is unequivocal and does not have any particular semantic depth which would prevent the relevant public from making a direct link with the services covered by that mark (see, to that effect, judgment in INNOVATION FOR THE REAL WORLD, cited in paragraph 30 above, EU:T:2013:300, paragraph 40). In view of the services covered by the application for registration, the mark applied for thus constitutes a banal expression which the relevant public will not need to analyse for it to be understood.

34 Furthermore, as the Board of Appeal stated in paragraph 33 of the contested decision, the word sign INVESTING FOR A NEW WORLD does not constitute a play on words and does not include any imaginative, surprising or unexpected elements capable of conferring distinctive character on it in the mind of the relevant public. Consequently, the sign at issue takes the form of an ordinary advertising message, which is devoid of any elements that might enable the relevant public to memorise it easily and immediately as a trade mark in respect of the services designated.

35 The Board of Appeal was therefore right in finding that the sign at issue was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

36 That finding is not invalidated by the applicant’s argument that the expression at issue may have numerous meanings which the Board of Appeal did not take into account although they show the originality and resonance of the mark applied for.

37 It must be stated that the applicant does not criticise the meaning of the sign at issue which the Board of Appeal took into account or the Board of Appeal’s findings as regards the laudatory nature of the sign. It confines itself to claiming that the sign at issue by its nature has multiple meanings, in particular the expression ‘for a new world’, and to mentioning some possible meanings, while stating that, in accordance with the judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, the fact that a mark has a number of meanings constitutes a hallmark of its distinctiveness.

38 In that regard, it must, first, be observed that it is clear from paragraph 47 of the judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, that the fact that a mark applied for can, inter alia, have a number of meanings is one of the characteristics which is likely, as a rule, to endow the sign with distinctive character and not, as the applicant seems to suggest, the decisive factor for establishing that that sign has distinctive character.

39 Secondly, it must be pointed out that the fact that the expression at issue may be interpreted in a number of ways does not alter the laudatory nature of that expression. In that regard, the applicant submits that the word ‘world’ may also be perceived as having the more specific meaning of ‘reference to a particular environment or scenario that the service provider has the unique skill to exploit’. Furthermore, it suggests that the expression ‘a new world’ may evoke a ‘more difficult world’, namely one in which, for example, financial hazards and risks are greater, or even connote ‘a change in investment strategy’ or that the investment related services are provided to customers in ‘new technologies’ and/or in new areas of investment or that investments are being made in ‘new world’ economies’, such as the ‘BRIC’ countries, namely the Federal Republic of Brazil, the Russian Federation, the Republic of India and the People’s Republic of China.

40 The fact remains, as OHIM observes, that all those possible meanings put forward by the applicant still denote positive connotations of the sign applied for in relation to the services at issue. In all the cases, even when the scenario to which the applicant refers is problematic, the message conveyed is positive for the relevant public, since it logically means that the services offered are thought to be appropriate for facing the new situation and providing solutions for the new challenges in terms of business opportunities.

41 Consequently, even as a laudatory or promotional slogan, the sign INVESTING FOR A NEW WORLD is not sufficiently original or resonant to require at least some interpretation, thought or analysis on the part of the relevant public, as that public is led to associate that sign immediately with the services concerned. Furthermore, it must be pointed out that, since the relevant consumer is not very attentive if a sign does not indicate to him the origin or intended use of that which he wishes to purchase, but just gives him purely promotional, abstract information, he will not take the time either to enquire into the various possible functions of the expression in question or mentally to register it as a trade mark (see, to that effect, judgment of 11 December 2012 in Fomanu v OHIM (Qualität hat Zukunft), T‑22/12, EU:T:2012:663, paragraph 30 and the case-law cited).

42 Thirdly, it must be borne in mind that a compound word sign must be refused registration under Article 7(1)(b) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 23 January 2014 in Novartis v OHIM (CARE TO CARE), T‑68/13, EU:T:2014:29, paragraph 41 and the case-law cited), which is the case here.

43 It follows that the first part of the plea in law must be rejected.

The second part

44 By the second part of the single plea in law, the applicant claims, in essence, that the Board of Appeal misinterpreted the judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, inasmuch as the outcome of the case which gave rise to that judgment was based on the inherent distinctive character of the mark at issue and not, as the Board of Appeal stated, on distinctive character acquired through use. It takes the view that the Board of Appeal was therefore wrong to make a distinction between the present case and that which gave rise to the judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, based on the absence of evidence of long-standing use of the mark applied for.

46 First, it must be pointed out that the Board of Appeal examined, in paragraphs 34 to 40 of the contested decision, the applicant’s arguments relating to the judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29. In particular, in paragraph 35 of the contested decision, it stated that the mark applied for had been rejected by the examiner on the ground that it would not be perceived by the relevant public as an indication of the commercial origin of the services covered by the application for registration and not because it was a promotional slogan. In paragraph 36 of the contested decision, it found that, although the judgment in Audi v OHIM, EU:C:2010:29, had clarified certain aspects of the case-law concerning trade marks, it could not be interpreted as meaning that any promotional phrase, however descriptive or banal, can now be registered as a trade mark merely because it is presented in the form of an advertising message.

47 In the present case, as has been stated in paragraphs 32 and 33 above, the Board of Appeal did not reject the trade mark application on the ground that the sign constituted a promotional slogan, but on the ground that, beyond its promotional meaning, that there was nothing in it which would enable the relevant public to perceive it as an indication of the commercial origin of the services at issue.

48 It is indeed true, as the applicant claims, that, in paragraph 37 of the contested decision, the Board of Appeal based the distinction between the present case and that which gave rise to the judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, inter alia, on the absence of long-standing use of the disputed mark.

49 However, the Board of Appeal simply stated that, furthermore, the Court of Justice’s finding that the sign at issue in the case which gave rise to the judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, had resonance was based, inter alia, on the fact that the sign was a widely known slogan which had been used by Audi for many years (paragraph 37 of the contested decision). It is not therefore apparent from the reasoning followed by the Board of Appeal that the latter made proof that a slogan is widely known a condition for that slogan to be capable of serving as an indication of the commercial origin of goods or services.

50 The Board of Appeal’s reading of the judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, must, moreover, be confirmed. The Court of Justice held, as regards the sign at issue in that case, that, inasmuch as it was a widely known slogan which had been used by Audi for many years, it could not be excluded that the fact that members of the relevant public were used to establishing the link between that slogan and the motor vehicles manufactured by that company also made it easier for that public to identify the commercial origin of the goods or services covered (paragraph 59 of the judgment).

51 As the Board of Appeal rightly stated in the present case, the applicant had not put forward any evidence that showed that the mark applied for had a reputation. It was not therefore possible, as the case may be, to take into account such a specific situation, as was the case in the proceedings which gave rise to the judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29 (see, to that effect, Qualität hat Zukunft, cited in paragraph 41 above, EU:T:2012:663, paragraph 33).

52 Moreover, inasmuch as the applicant’s arguments may be understood as seeking to claim that the reasoning of the Court in the judgment in Audi v OHIM, cited in paragraph 8 above, EU:C:2010:29, should, in essence, lead the General Court to annul the contested decision, they must be rejected as unfounded. In paragraph 47 of that judgment, the Court of Justice pointed out that the mark VORSPRUNG DURCH TECHNIK, which means ‘advance or advantage through technology’, had a distinctive character for the relevant public since that mark could have a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered. However, unlike the mark VORSPRUNG DURCH TECHNIK, the mark applied for, which does not, in this case, make it possible to identify the commercial origin of the services which it covers, has no distinctive character, as has been stated in paragraphs 30 to 34 above.

53 It follows from the foregoing that the second part of the plea must be rejected as unfounded.